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Volume 4, Issue 3 |
Things to consider when a company wants to discuss your K-State research
Visits and information exchanges between university researchers and interested parties in companies offer potential benefits for the researchers, the university and the companies involved. These discussions also have the potential to compromise the interests of researchers and their university if not properly managed. The potential benefits for researchers and K-State include the creation of new opportunities to: a) obtain sponsored research funding, b) license inventions arising from a researchers’ work, c) expand knowledge, d) open employment doors for K-State graduates and e) establish relationships with K-State alumni within these companies. The hazards include companies using information gained from researchers without consent, frequently with no financial return to the researchers or the institution.
Implicit in the background is the reality that inventions derived from university research are normally owned by the institution. But researchers and K-State are actually partners, sharing both obligations and returns from such inventions. Given the potential risks and rewards, researchers need to prepare extensively for company visits.
If you are a researcher facing such a situation, you can start preparing for a company visit by answering the following questions: 1) Why is the company interested and what information does the company want (i.e., what should be the depth of details for the discussions)? 2) What am I willing to disclose and discuss (i.e., what is public information and what information is already protected by a patent application)? and 3) What are the likely research needs and funding priorities for the company (i.e., what sponsored research or licensing opportunities might you be able to develop)?
Answering the first question can be as simple as asking your company contact prior to the visit. The second question is best answered with the assistance of the Kansas State University Research Foundation (KSURF) or the Office of Research and Sponsored Programs (ORSP). The answer involves examining the information you have already disclosed publicly, understanding any existing confidential disclosure agreements with the company as well as existing confidentiality commitments with others, and considering what information would allow the company to proceed without you (enabling information). Obviously, you do not want to give away information that would allow the company to expand on your research or use your ideas without a license. To answer the third question you need to do your homework on the company.
If you’ve disclosed your technology to KSURF, talk to KSURF before you meet with the company for specific advice about your visit. If your research hasn't been disclosed, talk to ORSP. It is in your best interest to have a confidentiality agreement in place before most scientific discussions with companies (beyond very preliminary ones) take place. These agreements help protect the intellectual property, which also protects any potential returns you may receive. Companies may also want you to sign a confidentiality agreement, if they will disclose information to you. These agreements should be reviewed and approved by KSURF and/or ORSP prior to the meeting. Signing anything relating to your K-State research without having it reviewed by KSURF and/or ORSP could jeopardize the rights to your research, which would affect both you and your University.
After your meeting, touch base with KSURF and/or ORSP. Let them know what was discussed and if any follow-up negotiations or discussions need to take place. Handling business arrangements relating to your technology is one of KSURF’s and ORSP’s core responsibilities for the University.
“KSURF and the Office of Research and Sponsored Programs are concerned with protecting the intertwined interests of both researchers and the university with regard to intellectual property,” Ron Trewyn, KSURF President, Vice Provost for Research and Dean of the Graduate School said. “We can only protect these interests when researchers disclose their possible inventions and keep us informed of impending and on-going discussions with their colleagues in industry. Keep us informed and we'll help you through the process so you and K-State can reap the benefits.”
Prior to a discussion with a company please contact either of the following individuals:
Marcia Molina
Director, Technology Transfer
KSU Research Foundation
785-532-5720, mmolina@ksu.edu
and/or
Paul Lowe
Asst. Vice Provost/Director
Office of Research and Sponsored Programs
785-532-6804, plowe@ksu.edu
